The Perils of Re-filing
Reliance Telecom Limited v Domains By Proxy, LLC, Sukhraj Randhawa WIPO Case No. D2014-0947
Disputed domain name: <reliancegroup.com>
Why is this decision interesting?
This case concerned a complainant who filed a complaint in relation to the same domain name and the same respondent against whom it had previously filed a complaint. In other words, can you bring the same case twice? The decision outlines the circumstances under which a re-filed complaint will be accepted.
‘Complainant is a member of a group of companies which operate in India and internationally under a variety of business names which include the word “reliance”.
The Complainant, Reliance Telecom Limited owns an Indian Trademark dated December 17, 1999 for RELIANCE , and another Indian Trademark Registration dated December 17, 1999 for RELIANCE.
The disputed domain name <reliancegroup.com> was registered on September 21, 1997 in the name of the Respondent, Sukhraj Randhawa. The disputed domain name does not revert to an active website at this time.’
‘On August 20, 2013, a prior UDRP proceeding had been filed by Complainant against Domains ByProxy.com and Sukhraj Randhawa with respect to the same domain name <reliancegroup.com>. WIPO Case No. D2013-1470 (“First Complaint”). The decision was given on October 8, 2013, denying the First Complaint, on the grounds that Complainant had failed to establish bad faith.’ So at that stage the Complainant had lost.
But this year the Complainant decided to have a second bite at the cherry and filed a new Complaint, WIPO Case No. D2014-094.We will call this the Re-filing.
The Panel first observed about the Re-filed Complaint that:
‘The parties and the disputed domain name in the First Complaint are identical to the parties and subject matter in the ( new case).’
So , could the second case, the Re-filing, go ahead?
To determine whether the re-filed complaint could go ahead, it was necessary for the Panel to outline the principles governing the re-filing of complaints.
Citing Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, the panel noted that:
"…a case cannot be re-litigated unless either (a) the decision is overturned on appeal [or] (b) limited grounds for rehearing or reconsideration by the first-instance court have been established. Such limited grounds are usually specified in Rules of Court and can include, for example: (a) serious misconduct on the part of a Judge, juror, witness or lawyer; (b) perjured evidence having been offered to the Court; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial and (d) a breach of natural justice. Usually, before ordering a new trial, a Court would have to be satisfied that a miscarriage of justice had occurred."
The complainant advanced two principal arguments in support of the re-filing of its Complaint: (1) “Discovery of credible and material evidence which could not have been reasonably foreseen or known; and (2) “Breach of natural justice/due process”.
First argument – Discovery of credible and material evidence
Was there ‘new evidence’?
The ‘new evidence’ the Complainant relied on was that it had discovered that the Respondent was a cybersquatter and that it had only discovered this after the first case was over. It claimed that this was so because after the first case, it discovered the email address of the Respondent and by that means was able to find out about the other UDRP cases in which the Respondent had been involved.
The Panel was not very impressed by this argument; the Complainant could have found out these so-called new facts even without the email address of the Respondent. So, the evidence was not “new”.
The Panel noted that the so-called newly discovered evidence ‘could, in appropriate circumstances, result in a proper re-filing’. But the circumstances here ‘are not sufficient to warrant a further proceeding between the same parties over the same domain name’. In particular, the Panel was ‘not convinced that [the] Complainant could not have uncovered the existence of multiple domain names held in the name of the Respondent…during the pendency of the First Complaint.’ Nor did the Complainant ‘explain why this form of rudimentary fact-finding was not employed in the investigation leading to the First Complaint.’ As such, the Panel rejected the characterisation of the evidence as ‘new’ (as occurred in The Knot, Inc. v. Ali Aziz WIPO Case No. D2008-0033), accepting the Respondent’s characterisation of the re-filing as ‘an attempt to “patch-up” the flaws in the original complaint’.
Second argument – Breach of natural justice.
The submissions relating to breach of natural justice were held to be unfounded. Invoking The Knot, Inc. v. Ali Aziz, the Panel stressed that it is the ‘fundamental responsibility of [the] Complainant to bring forward sufficient evidence to support all necessary aspects of its case’. The Panel noted that the Complainant ‘ought to have recognised that it was facing a fundamental challenge’ in establishing that it held prior trade mark rights. It was the Complainant’s obligation to meet this burden; ‘it was not the original Panelist’s obligation to remedy the manifest gaps in the Complainant’s case’. In any case, the Panel did in fact grant the Complainant an additional opportunity to bring forward evidence that would allow it to establish the existence of trade mark rights necessary to make out its case. That the documents submitted by the Complainant failed to achieve this was not a reflection on the Panel and was not a breach of natural justice.
Re-filed Complaint denied
In light of the above factors, the Panel denied the re-filed Complaint. Crucially, this decision was ‘confined to the merits of the application for refilling under the Policy’, as distinct from the ‘merits of the substantive Complaint’.
Take home message: The burden on the complainant of establishing that its re-filed complaint should be entertained under the Policy is a high one. As such, prospective complainants should only seek to re-file a complaint if the limited grounds for rehearing or reconsidering a complaint under the Policy can be clearly made out. Panels don’t look kindly upon complainants who re-file complaints for the purpose of remedying their prior errors, nor those who seek to blame UDRP panels for their own ineptitude. Complainants should also be reminded that if they are not successful under the Policy, there may still be other forums in which they could seek potential remedies.